Man who sued over a patent on online photo contests must pay fees to EFF

"Ranking things in categories... was well known before the Internet."

The Electronic Frontier Foundation has advocated against ridiculous software patents for more than a decade, but it wasn't until last year that the organization took on a pro bono client accused of patent infringement. A little-used video website called Garfum.com sued Pennsylvania photographer Ruth Taylor, saying she was infringing US Patent No. 8,209,618. Garfum, owned by a New Jersey man named Michael Garofalo, says the patent was infringed by the photo contests Taylor runs on her website, Bytephoto.

Garofalo's lawyers demanded $50,000 from Taylor as a royalty payment. After they discovered that Bytephoto's income in 2014 was less than $500, they asked to see Taylor's tax returns. They dropped their demand to $5,000, and later to $2,500.

Further Reading

Rather than pay, Taylor got in touch with EFF, and the timing was right. Taking on any patent case was a potentially big commitment. Even one that ends quickly can cost hundreds of thousands of dollars, and cases that go to a jury trial can cost millions.

"The idea that you could patent an abstract idea, find innocent enthusiasts online and demand settlement money—and then slink away once challenged and before the court issues a ruling—goes against any sense of fair play," wrote EFF lawyer Daniel Nazer at the time.

“Running away from any decision”

In an opinion (PDF) published yesterday, US Chief District Judge Jerome Simandle said that Garfum should pay due to its "unreasonable" behavior during the litigation.

The patent's key claim describes creating user accounts, uploading content, organizing it, and having users vote on the content. In the judge's view, it was obvious "in the post-Alice environment" that the patent doesn't describe any invention at all.

"The practice of ranking things in categories based on popular vote was well-known before the advent of the Internet, or even computers, and the requirement to involve an online database does not make the claim inventive," wrote Simandle. "Any person with pen or paper could perform the same steps."

The fact that Garfum dropped its case just after a hearing was set for EFF's motion "makes it appear as though Plaintiff was running away from any decision on the merits," he added.

Simandle, who took over the case after the previous judge passed away in October 2015, ruled that EFF can collect fees for work that took place after April of last year. That's when Garfum chose to oppose the motion to dismiss, even though by then "the handwriting on the wall for this sort of patent became clear under Alice and its progeny."

In all, Garfum is on the hook for 47 hours of work done by EFF's Nazer and four hours of work by other attorneys. That will add up to close to $30,000 on its own, and some additional hours will be added for work on the fee motions.

"We hope other patent owners who persist in asserting invalid software patents see these fee decisions and rethink their strategy," Nazer wrote in a blog post about yesterday's fee award.

Garfum was represented by Austin Hansley, the same small Texas law firm that has worked some of the most egregious patent troll cases in recent years. Hansley represented the second- and third-most litigious patent trolls in 2014. The firm also represented eDekka, a patent troll that was ordered to pay more than $390,000 in attorneys' fees after 168 of its cases were thrown out of an East Texas federal court.